Cupertino, we have a problem.

OAKLAND, California—Apple is a litigious company, most famously for its multi-billion dollar patent crusade against Samsung. The Cupertino company has a more quixotic legal battle going on against its competitors, however, that has also become a bit of a war against the English language. Since last year, Apple lawyers have been arguing that "App Store" is a trademarked phrase, and it has the right to stop others from using similar phrases. That includes Amazon, which was sued by Apple in March 2011, shortly after it opened the Amazon Appstore for Android.

Now, some of those issues are finally coming to a head in public. At a hearing today in an Oakland federal court, it became clear that while Apple may have a lot of fury and passion behind this lawsuit, it has run into trouble in the form of a very skeptical judge. US District Judge Phyllis Hamilton showed great doubt that Apple will be able to prove that consumers were confused or deceived by Amazon's use of the word "Appstore." At this point, it's somewhat remarkable that the company hasn't dropped this suit, since Hamilton indicated a year ago that she was unimpressed by Apple's arguments and denied a preliminary injunction.

Still, Apple continues to claim its "App Store" trademark is infringed, and separately that Amazon's promotion of its Appstore amounts to false advertising. Today's hearing was only concerning the false advertising claim, which Amazon wants thrown out without a trial. Amazon also contends the phrase "app store" is generic and can't be trademarked; that issue is currently scheduled to be tried by a jury in fall 2013.

Hamilton repeatedly questioned Apple's lawyer, David Eberhart, about what kind of evidence he had that Amazon had deceived customers with its advertising.

"They [Amazon employees] admit they targeted Apple customers, because Apple set the benchmark for what consumers expected," said Eberhart. "When you combine that with our evidence consumers associate the term 'app store' with Apple," it's enough evidence to warrant a trial.

"Everyone who uses a smartphone knows the difference between the Apple iOS system and the Android system," responded Hamilton. "Where's the confusion? There's some suggestion [by Apple] that if Amazon is using the 'Appstore' term someone might think they have as many apps as Apple does. Well, why? And how, in fact, does that contribute to any deception on the part of Amazon?"

In response, Eberhart showed a page from Amazon's store offering various smartphones. On the Android models, the page noted that software was available through the Amazon Appstore, while it noted that iPhones could get their software at the Apple App Store. "Consumers will see this kind of advertising and import their associations with Apple service. They understand what the App Store by Apple entails—hundreds of thousands of apps, and an ease of service unmatched by any others," said Eberhart. "When a consumer sees something like this they will be deceived into thinking the Amazon store has the same types of qualities."

Hamilton was even less impressed by the sheet of paper. "I don't see it," she said flatly. "I don't look at this and make that determination. I just don't understand the whole idea that people would misunderstand and blend these two different products and services."

This litigation may not have enormous business impact. If anything, Apple's vigorous litigation over "app store" phrase shows how strongly the company's top brass must believe its brand to be anointed, deserving to beat competitors not only in the marketplace but in court as well. The company touted its "revolutionary" products and glowing press reviews to a jury trial 40 miles south of here, and may end up a billion dollars richer for it; in this suit, it's essentially arguing that its App Store was so "pioneering" in 2008 that it needs a chunk of the English language as damages. After App Store, it seems, there's no room in the world for mere "app stores."

"A pioneering brand—the first successful brand in a new market—plays a unique role in educating consumers about the product category as a whole while simultaneously building consumer affiliation between the product and the pioneer," wrote Apple in its brief.

Eberhart echoed that language at the hearing today, saying that Apple was a "pioneering brand" that had "educated" consumers, and then that Amazon was somehow deceiving those consumers. The reasoning seems to go that Apple set consumer expectations so high when it created its App Store in 2008 that it is now uniquely capable of fulfilling those expectations.

Hamilton also seemed skeptical about Apple's trademark surveys even being able to show confusion. The surveys show that consumers tended to associate the phrase "App Store" with their company, a correlation that Hamilton called out as not being particularly meaningful. "I don't believe any consumers were directly asked whether they were deceived," she noted.

"That is a different survey, and I don't believe one that was required," responded Eberhart.

It's hard to see Apple's false advertising case going anywhere, and its chances of winning a trademark victory don't seem much better—although if it went to a jury, it's impossible to predict. Amazon was represented at the hearing today by Martin Glick, who really didn't have to say much, as Apple seemed quite capable of digging its own hole deeper. He did note that over the many months of litigation Apple hadn't produced much in the way of allegedly false ads.

"No accused ads were put forth," Glick told the judge at one point. "Today, I'm given a piece of paper that's not an ad for any app store. It's an ad for smartphones, and it's not even in the record before Your Honor."

The tone of these articles - here and elsewhere - is often one of "oh look how ridiculous _COMPANY is being, trying to go after someone for *this*". But it's important to keep in mind under US law, Apple and any other company is *required* to go after an entity they perceive as infringing in order to retain rights to the trademark.

Whether or not attempting to trademark "App Store" was a good idea in the first place is an entirely different matter...

"I don't believe any consumers were directly asked whether they were deceived," she noted.

"That is a different survey, and I don't believe one that was required," responded Eberhart.

So consumer confusion is pretty much key to making Apple's case, and they didn't bother to actually ask if any consumers had been confused...and don't plan to? Sounds like a some genius lawyering there.

Upon more consideration, I can see why their lawyer is keeping it nebulous here. Thinking about damages and general harm to Apple, it seems like a difficult case to make. (Although maybe they aren't going this far yet, I'm not really sure how this sort of litigation works)

Since people (generally) don't directly choose app stores, Apple can't say that they lost app sales to Amazon because Amazon tricked people into shopping at their store instead of Apples.

So they would have to make the case that people bought an Android smartphone due in large part to believing the devices were equivalent to Apple's because they had access to Amazon's Appstore?

The tone of these articles - here and elsewhere - is often one of "oh look how ridiculous _COMPANY is being, trying to go after someone for *this*". But it's important to keep in mind under US law, Apple and any other company is *required* to go after an entity they perceive as infringing in order to retain rights to the trademark.

Whether or not attempting to trademark "App Store" was a good idea in the first place is an entirely different matter...

From what I've read about that, it's not strictly true. Lawyers on retainer will tell you to pursue all cases, because no lawyer made a name for himself by telling a client not to pursue a legal action.

You must use the trademark or it will lapse, but that doesn't have anything to do with infringement on the mark.

The tone of these articles - here and elsewhere - is often one of "oh look how ridiculous _COMPANY is being, trying to go after someone for *this*". But it's important to keep in mind under US law, Apple and any other company is *required* to go after an entity they perceive as infringing in order to retain rights to the trademark.

Whether or not attempting to trademark "App Store" was a good idea in the first place is an entirely different matter...

You know when someone is reaching when they bring up the "tone" of an article. Know what? I can play that game too. The "tone" of your comment is seriously harshing my mood. Quit it!

Can you recite the specific section of this law that "requires" them to do this. I believe it only gives them the right to seek redress should they feel it affects them strongly enough.

The tone of these articles - here and elsewhere - is often one of "oh look how ridiculous _COMPANY is being, trying to go after someone for *this*". But it's important to keep in mind under US law, Apple and any other company is *required* to go after an entity they perceive as infringing in order to retain rights to the trademark.

Whether or not attempting to trademark "App Store" was a good idea in the first place is an entirely different matter...

They are required to protect their brand, but it's not too clear what that means. It certainly does not mean that they have to sue anyone they believe might possibly be infringing. They can make judgement calls of course.

One issue that Apple may have is that Steve Jobs publicly used the term App Store to describe competitors app stores. He didn't make any differentiation, so why should anyone else? Also, app has been used as a general term for years and years.

Thank you for this article, it was a real good read from a fly on the wall perspective rather than the biased articles usually by Jacqui Cheng that I generally read two lines and move on.

While Apple did pave the way with the iPhone and ios appstore, its just stupid to think when someone hears "app" they think of apple, happy this judge is seeing through the BS.

"App" has been short for application MUUUUCCCCHHH longer than anyone started associating it with mobile applications for IOS.

it seems biased to me

Jacqui writes very uncritical "fanboy" type articles about Apple products that become difficult to read after a while. I usually skip them now too.It's nice to see some reporting on ARS that is actually critical of Apple. They're becoming an impediment to innovation and business in general. They want to supress competition, not compete.

"Amazon also contends the phrase "app store" is generic and can't be trademarked; that issue is currently scheduled to be tried by a jury in fall 2013."

Side note here. It seems unconscionable to me that it will take 2.5 years (March 2011 to fall 2013) to bring this to trial. Why is our court system so incompetent? It leaves all use of these terms in legal limbo. I understand it takes some time to prepare a defense, but I don't see how Amazon could possibly need 2.5 years to prepare a defense on such a straightforward issue.

"Amazon also contends the phrase "app store" is generic and can't be trademarked; that issue is currently scheduled to be tried by a jury in fall 2013."

Side note here. It seems unconscionable to me that it will take 2.5 years (March 2011 to fall 2013) to bring this to trial. Why is our court system so incompetent? It leaves all use of these terms in legal limbo. I understand it takes some time to prepare a defense, but I don't see how Amazon could possibly need 2.5 years to prepare a defense on such a straightforward issue.

2.5 years because that amount of time assures a reasonable term of employment for lawyers, law office staff, law office maintenance workers, law office IT, plus reasonable contracts for law office supplies (including office supplies, utilities, and toilet paper). This is your government, inaction.

I've seen things like "A company defends a concept that it created." in defense of Apple.

What concept would anyone be referring to?

I was using the shorthand "Apps" on a folder on my PC long before Apple released its iOS. App is a common sense shortening for Application. If they wanted to patent their store's name "Appstore", they shouldn't have named it so generically.

A storefront with a built in download manager that will auto update the applications you have? I believe Steam by Valve did that first on the PC, and I wouldn't doubt if that were the only one.

But it's important to keep in mind under US law, Apple and any other company is *required* to go after an entity they perceive as infringing in order to retain rights to the trademark.

alohadave wrote:

From what I've read about that, it's not strictly true. Lawyers on retainer will tell you to pursue all cases, because no lawyer made a name for himself by telling a client not to pursue a legal action.

You must use the trademark or it will lapse, but that doesn't have anything to do with infringement on the mark.

CenterLess wrote:

Can you recite the specific section of this law that "requires" them to do this. I believe it only gives them the right to seek redress should they feel it affects them strongly enough.

A mark shall be deemed to be "abandoned" if either of the following occurs:(1)When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.(2)When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.

I believe the 'defend yourself or else lose it' idea stems from the bolded part. From what I can tell, if your product's name becomes the generic name for the category and you do nothing to stop it then others can point to this line and say 'but you failed to go after others before, and therefore doing so you implied it was OK to use this generically, thereby implicitly abandoning the trademark'.

The tone of these articles - here and elsewhere - is often one of "oh look how ridiculous _COMPANY is being, trying to go after someone for *this*". But it's important to keep in mind under US law, Apple and any other company is *required* to go after an entity they perceive as infringing in order to retain rights to the trademark.

Whether or not attempting to trademark "App Store" was a good idea in the first place is an entirely different matter...

Actually its not a requirement in actuality. The central idea of why the case was considered ridiculous by the same judge is the concept of an App; the App Store is a place where you can buy Apps and that the word "app" was extremely too generic to merely assign ownership to an individual entity.

Much like other similarities were made (shoe is to shoe store as app is to app store), it's really an elementary school analogy test and, therefore, should have never been granted a patent and should even be invalidated.

If Apple were to use a non-generic term however then they would have a case that would be worth pursuing. Otherwise all book stores, shoe stores, grocery stores, etc would have a field day patenting and suing one another. Oh and it's not about whether it was trademarked, it was whether they trademarked something to general that is really free for public use.

Can you recite the specific section of this law that "requires" them to do this. I believe it only gives them the right to seek redress should they feel it affects them strongly enough.

I'm not a lawyer, but this Overview of Trademark Law page created by William Fisher, Professor of Intellectual Property Law at Harvard Law School, should be able to answer your question. It explains why a company that has acquired rights to a trademark must defend it against infringement and dilution or risk losing it. All of the answers on the page contain a substantial number of links to the relevant sections of the US Code and links to important case summaries that have shaped and been affected by trademark law.

It's remarkable just how stupid the Apple legal team apparently believes judges, juries, and consumers to be. The text reads--although highly offensive to most Apple customers on a direct basis, certainly--as if no one is capable of understanding the prose apart from the authors--no one, including the judge. It's really very little better than "garbage talk" and is incredibly offensive in that its assumptions are that in the world Apple alone constructs reason and logic. Their summarized positions are so obviously and candidly wrong they are nearly vulgar.

I don't buy the company's products and make no recommendations that other people buy them, so sleep is not a problem for me... Yet, it amazes me how people can read these summaries in which Apple continues to call its own customers morons confused about everything and anything that serves Apple's narrow purposes--and these people (well, some of them, anyway) still buy Apple products, thinking that Apple is just being clever by calling them morons.

I can only conclude, alas, that regrettably Apple may be right... Oh, to be sure, none of Apple's pseudo-legal points are valid and the Judge is entirely correct in her observations. Apple's only "right" insofar as it publicly calls out its customers as near-illiterate idiots who think the best way to spell "Apple" is "Amazon"...and *those very people* keep right on buying Apple products even as Apple makes sport of them quite openly.

Apple's customers in the main are apparently idiots who get exactly what they deserve--OK, this isn't fair--let me qualify that. If you are *still* buying Apple's products after all of this, then you need to see precisely how the idiot moniker fits *you*...

I'm trying to imagine a courtroom in which Google or Microsoft's lawyers deadpan to a judge: "Your honor, our customers are too stupid to tell the difference between our products and theirs, and when our customers buy a product, they literally don't know if it's a Microsoft, a Google, or an Apple product! We therefore must control the language so that our customers will know what they are buying."

It all puts me in mind of Steve Jobs' (RIP) unbelievable waste of time as orchestrated by someone with a crippled sense of humor: The Hunt for the Next Apple CEO... Remember that phony-baloney? Jobs was *always* ridiculing Apple in some fashion or other--either the company, its execs, or its products--or even all three. But isn't it time to move on from that place, Apple?

Connery to Cook: Fire your legal teams and stop all of this nonsense. Jobs (RIP) might've bankrupted the company trying to construct a legal monopoly for himself, but, hey, Cook--you don't have to. Be Smart. Be Different. Be an anti-Jobs. Tear the picture from the wall and put it in storage and get moving. Instead of same-old, same-old, do something with Apple besides starting short-lived fads and then suing everyone who attempts to compete with you.

The tone of these articles - here and elsewhere - is often one of "oh look how ridiculous _COMPANY is being, trying to go after someone for *this*". But it's important to keep in mind under US law, Apple and any other company is *required* to go after an entity they perceive as infringing in order to retain rights to the trademark.

Whether or not attempting to trademark "App Store" was a good idea in the first place is an entirely different matter...

When was the last time a company lost a major trademark because it didn't have enough enforcement actions?

"Amazon also contends the phrase "app store" is generic and can't be trademarked; that issue is currently scheduled to be tried by a jury in fall 2013."

Side note here. It seems unconscionable to me that it will take 2.5 years (March 2011 to fall 2013) to bring this to trial. Why is our court system so incompetent? It leaves all use of these terms in legal limbo. I understand it takes some time to prepare a defense, but I don't see how Amazon could possibly need 2.5 years to prepare a defense on such a straightforward issue.

In direct consideration of your side point: anyone wanna take bets that the fact we have a "google play store" now has nothing whatsoever to do with this case? They even avoided the term previously: "android marketplace."

All to avoid infringing a trademark that should never have been registered.

The tone of these articles - here and elsewhere - is often one of "oh look how ridiculous _COMPANY is being, trying to go after someone for *this*". But it's important to keep in mind under US law, Apple and any other company is *required* to go after an entity they perceive as infringing in order to retain rights to the trademark.

Whether or not attempting to trademark "App Store" was a good idea in the first place is an entirely different matter...

When was the last time a company lost a major trademark because it didn't have enough enforcement actions?

But it's important to keep in mind under US law, Apple and any other company is *required* to go after an entity they perceive as infringing in order to retain rights to the trademark.

alohadave wrote:

From what I've read about that, it's not strictly true. Lawyers on retainer will tell you to pursue all cases, because no lawyer made a name for himself by telling a client not to pursue a legal action.

You must use the trademark or it will lapse, but that doesn't have anything to do with infringement on the mark.

CenterLess wrote:

Can you recite the specific section of this law that "requires" them to do this. I believe it only gives them the right to seek redress should they feel it affects them strongly enough.

A mark shall be deemed to be "abandoned" if either of the following occurs:(1)When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.(2)When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.

I believe the 'defend yourself or else lose it' idea stems from the bolded part. From what I can tell, if your product's name becomes the generic name for the category and you do nothing to stop it then others can point to this line and say 'but you failed to go after others before, and therefore doing so you implied it was OK to use this generically, thereby implicitly abandoning the trademark'.

The Thermos company is an example of what happens when a trade mark is not defended. Because they didn't defend their trademark, thermos is now a generic name for a vacuum flask. On the other hand, Coca Cola and Pepsi have reps order their own sodas at restaurants that only sell their competitors' versions. If the restaurant serves the competitors' soda without informing the customer that it is not what was ordered, the restaurant gets in deep doodoo with the soda vendor. That's why when you order Coke, you'll often hear "We only have Pepsi." (or vice versa)

"Amazon also contends the phrase "app store" is generic and can't be trademarked; that issue is currently scheduled to be tried by a jury in fall 2013."

Side note here. It seems unconscionable to me that it will take 2.5 years (March 2011 to fall 2013) to bring this to trial. Why is our court system so incompetent? It leaves all use of these terms in legal limbo. I understand it takes some time to prepare a defense, but I don't see how Amazon could possibly need 2.5 years to prepare a defense on such a straightforward issue.

It's not really a matter of either side needing 2.5 years to prepare itself, necessarily, as it is that the court is in a busy urban district and has a docket crowded with other cases. That includes criminal cases where the defendant has a constitutional right to a speedy trial and so will get bumped in front of corporations like Amazon.